Tahany Ibrahim. El-Wardany et al.

Patent Trials and Appeals Board

Dec 13, 2019

14397568 - (D) (P.T.A.B. Dec. 13, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/397,568 10/28/2014 Tahany Ibrahim El-Wardany 60363US01 (U320036US) 7682
87423 7590 12/13/2019
Cantor Colburn LLP - Otis Elevator
INTELLECTUAL PROPERTY DEPARTMENT
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
RODRIGUEZ, PAMELA
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
12/13/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
frederic.tenney@otis.com
frederic.tenney@otis.com
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAHANY IBRAHIM EL-WARDANY, WAYDE R. SCHMIDT,
XIAODONG LUO, ANTHONY COONEY, and JOHN T. PITTS
Appeal 2018-001941
Application 14/397,568
Technology Center 3600
BEFORE ADRIENE LEPIANE HANLON, LILAN REN, and
SHELDON M. MCGEE, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. Final Act. 2–6. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as “Otis
Elevator Company.” Appeal Br. 2.
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Application 14/397,568

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CLAIMED SUBJECT MATTER
The claims are directed to “braking systems, such as those used to
slow and/or stop an elevator car or counterweight, for example in an over
speed condition. More particularly, the embodiments can relate to an
elevator safety brake system having a composite friction surface.” Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A brake element, comprising:
a friction material including a polymer-based ceramic
matrix composite material having a plurality of fibers;
wherein the plurality of fibers are arranged at an angle to
a braking direction, and an orientation of the fibers is maintained
throughout a thickness of the ceramic matrix composite material,
wherein a coefficient of friction of the friction material is a
function of the fiber angle relative to the braking direction.
Claims Appendix (Appeal Br. 9).
REFERENCES
The prior art references relied upon by the Examiner are:
Krenkel
Rosenlocher
Takayuki
US 6,668,985 B2
US 7,441,635 B2
JP 9071769
Dec. 30, 2003
Oct. 28, 2008
Mar. 3, 1997
REJECTIONS
The Examiner rejects claims 1–8, 11, 12, and 15–17 under pre-AIA 35
U.S.C. § 103(a) based on Takayuki and Rosenlocher. Final Act. 2.
The Examiner rejects claims 9, 10, 13, and 14 under pre-AIA 35
U.S.C. § 103(a) based on Takayuki, Rosenlocher, and Krenkel. Final Act. 6.
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that Appellant has identified reversible
error, and we affirm the Examiner’s rejections for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
Claim 1
In rejecting claim 12, the Examiner finds that Takayuki teaches all
limitations except a polymer-based ceramic matrix composite and “a
coefficient of friction . . .” for which Rosenlocher is cited. Final Act. 3.
Appellant argues that the Examiner reversibly erred in finding that Takayuki
teaches “an orientation of the fibers is maintained throughout a thickness of
the ceramic matrix composite material” because the fibers in Takayuki are
attached to the surface of the ceramic base material. Appeal Br. 5 (arguing
that the fibers in Takayuki “are bonded or attached to a plate-shaped ceramic
base material on the surface of the base material of the brake shoes” and

2 Appellant does not present separate arguments for the obviousness
rejections of claims 2–8, 11, 12, 15–17. See, e.g., Appeal Br. 5–7. The
obviousness rejection of claims 2–8, 11, 12, and 15–17 therefore stands or
falls with that of claim 1. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).

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Application 14/397,568

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may alternatively be “laminated to the surface of the plate-shaped ceramic
base material”).
From the outset, we note that the claim language “an orientation of the
fibers is maintained throughout a thickness of the ceramic matrix composite
material” requires no more than the orientation of the fibers to be maintained
throughout some––but not the entire––thickness of the ceramic material.
See Claim 1, Appeal Br. 9 (emphasis added). Appellant’s argument that the
fibers in Takayuki are attached to the surface of the ceramic material3
therefore does structurally distinguish the prior art.
Moreover, the Examiner finds that figures 3 through 6 in Takayuki
show a ceramic material incorporating fibers that have a constant orientation
through the thickness of the ceramic material. Final Act. 3, 7. Appellant’s
argument does not address the Examiner’s findings with regard to figures 3
and 6 and in fact acknowledges that “the fibers shown in FIGS. 4 and 5 are
arranged such that the fibers extend continuously through a thickness of the
insert.” Appeal Br. 5–6. We are therefore unpersuaded that Appellant’s
argument identifies reversible error in the Examiner’s findings with regard
to this claim limitation.
Appellant next argues that “only an end of each of the fibers is
exposed to the braking surface” in Takayuki which does not teach or suggest
a “plurality of fibers are arranged at an angle to a braking direction” as
recited in claim 1. Appeal Br. 6. Appellant, however, does not sufficiently
explain why this limitation excludes the prior art structure having fiber ends

3 We emphasize that Appellant does not support this argument with citation
to Takayuki. See Appeal Br. 5. The argument is therefore also unpersuasive
as lacking evidentiary support.
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exposed to the surface. Appellant merely argues, without sufficient
explanation, that the prior art “fibers within each layer cannot be considered
arranged at an angle to a sliding or braking direction” as recited. Id.
Appellant does not address the Examiner’s finding that figures 6b through
6d of Takayuki specifically show fibers 27 being arranged at an angle to the
braking direction. See Ans. 9. Appellant’s argument lacking in both
evidentiary support and structural distinction over the prior art does not
persuade us of reversible error.
Appellant lastly argues that a skilled artisan would not have combined
Takayuki with Rosenlocher to arrive at the apparatus recited in claim 1.
Appeal Br. 7. Appellant argues that Takayuki teaches brake shoes for an
elevator which are intended to stop the movement of the elevator and
Rosenlocher teaches away from “such dynamic applications.” Id. Appellant
cites the following statement from Rosenlocher as support:
In contrast to brake pads for brakes used in the driving mode
(service brakes, destined to decelerate a vehicle in motion to a
lower velocity) which must have a sufficient resistance to
abrasion and a high sliding, or dynamic, friction coefficient,
only static friction counts for brake pads for parking brakes.

Rosenlocher 1:49–54; see Appeal Br. 7 (citing Rosenlocher 1:49).
Appellant’s argument is not persuasive for multiple reasons. First and
foremost, Appellant does not show that Rosenlocher teaches away from “the
path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994) (holding that “in general, a reference will teach away if it
suggests that the line of development flowing from the reference’s
disclosure is unlikely to be productive of the result sought by the applicant”).
Appellant’s argument also lacks factual support with citation to Takayuki.
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See Appeal Br. 7. Appellant’s argument also does not address––and
therefore does not identify reversible error in––the Examiner’s rationale for
the obviousness rejection. Compare id., with Final Act. 4 (providing that a
skilled artisan would have combined the teachings for various reasons
including performance improvement in the brake pads); see also Ans. 10
(describing the similarities between the references).
Based on the foregoing, we sustain the rejection of claim 1 because no
reversible error has been identified by Appellant in the Examiner’s analysis.
Claims 9, 10, 13, & 14
Appellant’s sole argument for claims 9, 10, 13, and 14 is that
“Krenkel fails to cure the defects of Takayuki and Rosenlocher with respect
to Claims 1 and 12.” Appeal Br. 7. Having found no such defects, we affirm
the rejection of claims 9, 10, 13, and 14 for the reasons provided supra.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–8, 11, 12,
15–17
103(a) Takayuki,
Rosenlocher
1–8, 11, 12,
15–17

9, 10, 13, 14 103(a) Takayuki,
Rosenlocher,
Krenkel
9, 10, 13, 14
Overall
Outcome
1–17
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Application 14/397,568

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED